Patenting Inventions

1. Evaluation

When an invention is submitted to CTL, to evaluate its potential, you and your licensing professional will work together to answer the following questions:

What problem does the invention solve?

Does the invention offer a cheaper and/or better way of doing something?

Are there competing technologies available? How much better is the new invention than its competitors?

Do you intend to continue working in this area?

Would you be willing and able to conduct experiments in order to develop this invention?

Does it have the potential to create a new market?

How much investment, in both time and money, will be required to bring the invention to market?

Is there potential for a startup company to create a business based on the invention that can foster regional economic development?

In order to be eligible for patent protection, United States patent law requires that an invention be:

New or Novel: The invention must be demonstrably different from publicly available ideas, inventions, or products (so-called "prior art"). This does not mean that every aspect of an invention must be novel. For example, new uses of known processes, machines, compositions of matter and materials are patentable. Incremental improvements on known processes may also be patentable.

Useful: The invention must have some application or utility or be an improvement over existing products and/or techniques.

Non-Obvious: The invention cannot be obvious to a person of "ordinary skill" in the field; non-obviousness usually is demonstrated by showing that practicing the invention yields surprising, unexpected results.

Not all invention disclosures submitted to CTL are appropriate for patenting. CTL will work with the researcher to determine the potential and patentability of any disclosed inventions. If the decision is made to go ahead with a patent application, CTL will manage the process.

2. Provisional Patent Application

To protect the invention after you disclose it, CTL may submit a provisional patent application through one of the law firms it works with. A provisional patent application is a simple document that functions as a year-long "placeholder" should you and CTL decide to file a formal patent application. The decision to file a formal patent application will be based in part on the amount of industry interest expressed during the twelve month window. Therefore, CTL's licensing officers will actively market the invention to companies to find a licensee.

Your participation in this marketing process is critical. If at the end of the twelve month period an invention is generating a sufficient amount of industry interest, CTL will file a formal patent application on your behalf. The formal application is a complex document that will require your time and attention.

While the patent attorney and CTL will handle the paperwork, your input will be essential as the patent application will need to demonstrate that the invention satisfies three criteria: utility, novelty and non-obviousness. Also, the patent application needs to provide sufficient written description that an expert in the field can independently re-create and use the invention. Roughly half of inventions disclosed to CTL will be put into the patent process.

3. Formal Patent Application

Once the formal patent application is sent to the US Patent and Trademark Office (USPTO), due to USPTO back-log, it may be up to two years before the patent application is reviewed by a USPTO Examiner. When the USPTO Examiner delves into your patent application, they will challenge whether it is indeed new, useful and non-obvious. They will also challenge whether the written description in the patent application is adequate. For example, the USPTO Examiner will look for "prior art" and send back references to existing patents and previous scientific publications that he considers similar.

The patent attorney, your licensing officer, and you will need to respond; this is an iterative process between the USPTO, the patent attorneys, CTL, and you that can span a few months to a few years. Average costs to patent an invention in the United States range from $35,000 to $70,000 in legal fees. If patent protection is pursued in countries outside the United States, these legal fees skyrocket. Clearly, an invention must have potential market value in order to justify its patenting costs.

Documentation

Patent application (3 parts)

The Specification: The researcher describes the background of the invention, including the problem solved, materials and methods necessary to make the invention and a description of the "best mode" of practicing the invention. Federally funded inventions must be acknowledged in the Specification.

The Claims: Found at the end of the patent application, these constitute the "metes and bounds" of the patent and are therefore, the legal description of the exact property that is covered by the patent. Because of their significance, CTL and the patent attorney will thoroughly review the Claims; it is the Claims section which will ultimately dictate the value of the patent.

Supporting Documentation (3 pieces)

The Oath or Declaration (Inventorship): The inventor states that he or she has reviewed and understood the contents and believes that he or she is the original, first and sole or joint inventor. The USPTO requires that all inventors and only the inventors be listed on a patent application. A patent can be held invalid not only if true inventors are not named, but also if an individual is claimed to be an inventor (or co-inventor) and they are not.

The Assignment: The inventor assigns his or her rights in the invention to Cornell University.

The Information Disclosure Statement: Under patent law, the application must provide the USPTO with any public document that may be relevant to the patentability of the invention such as known prior art.

Additional Steps

Filing Fee: Cornell University pays all filing costs and prosecution and maintenance fees.

Deposit of Biological Materials: Required for many biological materials, deposit of biological material is typically made with American Type Culture Collection (ATCC).